TMEP 809.01: Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration

809.01
Examining Applications for Marks Comprising Non-English Wording that Do Not
Include an Accurate Translation or Transliteration

In order to properly examine applications with non-English
wording, the translation and transliteration of the non-English wording must be
determined prior to performing a search of the mark. This is critical because the
foreign equivalent of an English term may be regarded in the same way as the English
term for purposes of determining descriptiveness, requiring disclaimer, and citing marks
under §2(d) of the Act (see, e.g.,
TMEP
§§1207.01(b)(vi), 1209.03(g)).

Therefore, if there is no translation and/or
transliteration in the initial application, the examining attorney should ascertain the
meaning of non-English wording before searching the mark.

The examining attorney may obtain the meaning of
non-English wording through sources such as foreign language dictionaries and search
engines. The examining attorney may also consult the Trademark Librarian or the
Translations Branch, as appropriate.

If research by the examining attorney, the Trademark
Library, and/or the Translations Branch indicates that the term has no meaning or no
clear and exact equivalent in a foreign language, although no inquiry regarding the
meaning in a foreign language is necessary, the examining attorney has the discretion
under 37 C.F.R. §2.61(b) to make such an inquiry. If no inquiry is made, the examining
attorney must enter a Note to the File in the record indicating that the term has no
meaning in a foreign language. In such cases, a statement regarding meaning must not be
entered for printing in the Official Gazette. See
TMEP §809.01(a) regarding when an inquiry is made.

If the examining attorney determines the meaning of the
non-English term(s), he or she must search the terms as they appear in the application,
the transliterated terms, and the English translation(s) for the terms, as applicable.
The examining attorney must also require (under 37 C.F.R. §2.61(b)) that an accurate
translation be made of record by the applicant using the researched translation or other
accurate translation provided by applicant. If the applicant disputes a translation
obtained through online resources, the examining attorney should supplement the record
with evidence from the Trademark Librarian and/or the Translations Branch.

If the translation is provided or supplemented after the
examining attorney has conducted a search for conflicting marks, the examining attorney
must conduct a new search of the transliterated terms and/or the English translation(s)
for the terms, as applicable.